Sectors
Roberto Fernandez headshot.

Roberto J. Fernandez

Senior Counsel

Roberto J. Fernandez

Senior Counsel

Roberto J. Fernandez advises innovative technology companies on building and managing patent portfolios that support product development, manufacturing, and long‑term commercial strategy. He works closely with in‑house legal, engineering, and business teams to align patent procurement, continuation practice, and design protection with competitive positioning, product lifecycle planning, and future monetization objectives.

Roberto’s practice centers on patent prosecution and portfolio development for companies operating in complex mechanical and electromechanical technology spaces. He regularly advises on claim strategy, continuation and divisional planning, design patent overlays, and obtaining allowance of strategically valuable claims, helping clients protect innovations that matter most as products move from development to commercialization.

He works extensively with technologies involving manufacturing systems, robotics and automation, medical devices, automotive and mobility applications, energy and power systems, and consumer and industrial products, particularly where hardware, electronics, and software‑enabled systems intersect.

Roberto’s practice centers on high‑stakes patent portfolio development for companies operating in complex mechanical and electromechanical technology environments. His work focuses on helping companies protect core product offerings and technology platforms in ways that are practical, scalable, and aligned with how the business operates.

Roberto also draws on significant experience in post‑grant Patent Trial and Appeal Board proceedings to inform upstream prosecution and portfolio decisions, allowing clients to better understand how patent drafting and filing strategies may later affect enforcement, defense, or broader risk management considerations.

Roberto is particularly well‑suited for companies seeking counsel who combines efficient, scalable execution with hands‑on strategic guidance tailored to the company’s technology, growth stage, and business objectives. Clients value his ability to translate technical innovation into practical legal strategies that evolve alongside the business.

Roberto is a member of the firm’s Mechanical & Electromechanical Technologies Practice, PTAB Trials Practice, and Design Rights Team, as well as the Automotive, Food & Beverage, and Energy Industry Teams.

Awards and Recognition

  • Illinois Super Lawyers® Rising Star (2022-2024)

Presentations and Publications

  • Panelist, Practice Before the PTAB, PTAB Bar Association (July 2022)
  • Presenter, Idea – Invention – Industry, Chicago Inventors Organization Annual Conference (October 2019)
  • Alumni speaker, Milwaukee School of Engineering Annual Scholarship Luncheon (October 2016)
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March 25, 2026 Manufacturing Industry Advisor

Federal Circuit Widens Net for Corresponding Structure under §112(f) – Three Takeaways for Patent Counselors

The specification of the patent at issue described two functions and referenced several example conventional controllers. Gramm argued that all referenced conventional controllers qualified as corresponding structure under 35 U.S.C. §112(f). The district court disagreed, concluding that one controller was restricted from being corresponding structure under §112(f) because it was unable to perform one of the functions mentioned in the specification, even though that function was not part of the claimed limitation.
March 27, 2025 In the News

Roberto Fernandez Comments on New USPTO Procedures

Foley & Lardner LLP senior counsel Roberto Fernandez assessed new procedures at the U.S. Patent and Trademark Office (USPTO) in the Law360 article, "New Procedures Expected To Result In More PTAB Denials."
March 17, 2025 Events

Join Us at ProMat 2025

We’re gearing up for ProMat 2025, a leading manufacturing and supply chain conference, hosted in Chicago on March 17-20, 2025. Will we see you there?
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August 7, 2024 Manufacturing Industry Advisor

Using Global Patent Trends in Smart Manufacturing to Develop an Informed and Effective IP Strategy 

In today’s global economy, product research and development (R&D) has historically been concentrated in the U.S. and China.
April 12, 2024 Foley Viewpoints

IPR Filings on Sustained Upward Trajectory

A recent report from patent data powerhouse RPX Corp. shows that inter partes review (IPR) filings have increased significantly over the...
April 2, 2024 Foley Viewpoints

3D Printing Patent Trends Show Growth in Surprising Areas

The EPO published a study showing that 3D printing is a white hot area in patent filings. The study found that “between 2013 and 2020,...